In order do make a final office action allowable, I need to amend independent claim 1 which broadly claims a rotating device specific to the art which would cover most potential infringements. The single limitation for allowance; claims a sleeve and bolt with a non-Newtonian oil lubricant between them which creates a drag that controls the rotational speed of the rotating device. My questions is, would this be consider equivalent in view of the "doctrine of equivalents" for infringement in the US for an electric motor, which would also control the rotational speed of the rotating device? I most likely would not be able to amend claim 1 with "rotational control" limitation only.

The publication number is US20200132895A1 and the dependent claims for rotational control are 5 and 6 (needed for overcoming Gantz US4466698A and Brobst US 6053409 Shirasshi US 5142404)

  • The question is too specific and without needed detail. I'm not sure anyone would study it but you could include publication number assuming it is published. If it isn't published please don't give more details. DOE is not acknowledged by courts very much. – George White Dec 14 '20 at 20:49
  • There is a science and art to responding to office actions. Your options may be greater than whatever the examiner might be suggesting. – George White Dec 14 '20 at 20:50
  • I agree with George White. I'd need to read the entire application and cited art to comment. Even with that I'd defer to an actual patent attorney or agent with respect to amending claims. – Eric S Dec 14 '20 at 21:15
  • On a purely technical front, I don't consider a rotary dampener and an electric motor equivalent as a means to control rotational speed any more than I consider a horse drawn wagon the equivalent to an airplane as a means to travel. – Eric S Dec 14 '20 at 21:18
  • In very general terms - If the potential infringer uses a different way of rotational control you might want to look for patentablity elsewhere, but in common with the potential infringer's device. – George White Dec 14 '20 at 23:44

Under patent infringement doctrine, there can be infringement under doctrine of equivalents or under means plus function language. The latter is invoked when the claim includes functional language. Functional language is language in the claim that does not describe claim elements nor connects them. In your claim 1, the language “which creates a drag . . .” Is functional. This gives rise to likely means plus function equivalents not doctrine of equivalents. The doctrine of equivalents is broader protection, as means plus function equivalents just give rise to a narrower range of equivalents to what is defined in your spec. So you would need to read infringement upon a narrower equivalence doctrine.

  • Could you try to clarify this? I found it very confusing. – Eric S Dec 26 '20 at 15:24
  • Thanks! That's exactly what I was looking for. – Helmuth Bachmann Dec 27 '20 at 20:57

If the aspect of your invention that gives it novelty and non-obviousness over prior art references is not core to its functionally then you are likely to end up with a patent that is easy to design around.

To get a more valuable patent you would need to show how the core functionality has aspects that are not in the prior art.

  • I agree with both of your comments. Thank you! – Helmuth Bachmann Dec 16 '20 at 1:12

In the prosecution of some of my patents, examiners would simply reject things citing a patent that is hardly related. Basically this is laziness asking the applicant to educate the examiner. In US5142404A the invention has nothing to do with your application and is deflecting a laser beam for printing, not reflecting sunlight for the purpose of deterring bird strikes. US6053409A similarly is a different application altogether as it is for optical imaging. Inventions are allowed to use an existing device in a new application. In my mind US4466698A is the most relevant and you should put most your effort figuring out how to differentiate your invention to that patent.

As I've said, I'm not a patent attorney. An attorney would know how to communicate differences from prior art to the examiner. This is the main reason I always suggest working with an attorney or agent when pursuing a patent.

  • To patent a new use of an existing device one needs a method claim. – George White Dec 16 '20 at 2:08
  • @GeorgeWhite I didn’t specify, but your comment is another reason for using a patent professional. – Eric S Dec 16 '20 at 15:06

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